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Archive | February, 2010

Consequences of Disclaiming Exclusive Rights

World Publications, LLC v. GMW Digital, LLC, D2009-1737 (WIPO February 8, 2010) is a brief decision. The complaint was denied on the grounds that the Respondent had registered the disputed domain names – <> and <privatemeetingsummit> – prior to (in fact, many years earlier) than the Complainant’s acquisition of a trademark right. I am limiting […]

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Failing to Make a Case for Confusing Similarity

Paragraph 4(a)(i) of the Policy sets forth the elements for jurisdiction. A complainant has standing to maintain a UDRP proceeding only if 1) it has an existing trademark to which 2) the disputed domain name is identical or confusingly similar. If the complainant either has no trademark or if it does but the domain name […]

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Proving Common Law Trademark Rights by Showing Renown in a Particular Marketplace

However identical or confusingly similar a disputed domain name may be to a name used by the complainant if the name is not a trademark the dispute does not belong in a UDRP proceeding. Although it is not necessary for an alleged trademark to be registered, the complainant’s burden of proof rises in proportion to […]

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Targeting as an Essential Element of Proof for Trademarks Composed of Generic and Descriptive Terms

Having a registered trademark buys standing but it is not sufficient to win a domain name if its composition is on the weaker end of the classification scale.  The Panel noted in National Gardening Association, Inc. v. CK Ventures Inc., FA0911001294457 (Nat. Arb. Forum February 16, 2010) that “it seems probable that the USPTO only […]

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Default Not An Admission of Material Facts

Respondents default in appearance in a high percentage of cases and in many of them the complainant prevails. However, a complainant is not entitled to relief simply because it has a trademark and a respondent does not suffer forfeit of the domain name because it defaults. This was illustrated most recently in General Electric Company […]

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Insufficiency of Evidence; Benefit of the Doubt

Tatra, a.s. has national trademark registrations for TATRA in the United States and the European Community and is also the owner of a number of other TATRA and TATRA-family trademark registrations around the word, including the International Trademark Registry. It does not appear to have a trademark in Russia, the Respondents’ home jurisdiction in TATRA, […]

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Crossing Boundary Separating Denotative and Connotative

Yesterday’s Note discussed a dictionary word used misleadingly to confuse Internet users looking for the Complainant, but words can be used denotatively as well as connotatively. In ordinary usage, words often cross the boundary that separate them as a speaker weaves his or her sentences. In the dictionary, definitions are denotative. For example, defining the […]

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Respondent Responsible for the Content of the Website

The general rule is that where a respondent uses a parking service to populate its website with links that redirect Internet users to goods or services competitive with complainant it violates paragraph 4(b)(iv) of the Policy. The underlying principle is that a respondent cannot evade its representation and warranty under paragraph 2 of the Policy […]

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Correcting the Law in a Later Decision Wrongly Stated in an Earlier One

There is no intra-UDRP procedure for correcting a wrong decision. To state the case charitably, there are some decisions that deserved more than a single set of eyes, but the Policy provides no procedure for appeal. Recourse is to a national court, which in the United States would be a claim in district court under […]

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Contract Complaints Outside Scope of UDRP

The UDRP is a niche regime for arbitrating claims of abusive registration of domain names. It is not a stand-in for a court of law. The Complainant’s theory in IM Global LLC v. Intermedia Film Equities, Sterling Davis, D2009-1690 (WIPO January 24, 2010) was that the Panel could order transfer of the disputed domain name, […]

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Linguistic Analysis Rejecting the Conjunctive Bad Faith Construction of the Policy

This Note summarizes the linguistic analysis in response to the Octogen line of cases and the most recent rejection of the construction for “retrospective bad faith,” Validas, LLC v. SMVS Consultancy Private Limited, D2009-1413 (WIPO January 20, 2010). The first case decided under the UDRP regime concluded that the complainant was required to plead and […]

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Retrospective Bad Faith, Revisited

To this observer, the most significant decisions in 2009 disputes were those in which Panels lined up on opposite sides in construing paragraphs 4(b) and 4(b)(iv) of the Policy. Those arguing for retrospective bad faith construe the paragraphs in a matrix that includes the representation and warranty provision of the Registration Agreement, paragraph 2 of […]

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Commencing a Proceeding in Violation of Certification

Complainants have to have rights in a trademark to maintain a UDRP proceeding and demonstrate the source of those rights, by registration, license or common law. They must also certify that there is merit to the claim pursuant to Rule 3(b)(xiv) of the Rules of the Policy, which reads Complainant certifies that the information contained […]

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Passing Off, Pretending to be Complainant or Known by the Domain Name

Registrants have tried a number of ploys to avoid having the disputed domain name forfeited to the complainant, including passing themselves off as the complainant or pretending to be commonly known by the domain name. The Respondent in Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum January 13, 2003), for example, called […]

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Marshaling Evidence For and Against Exclusivity of Generic Terms

There is an interesting choreography between trademark holders and domain name registrants when the prize is a combination of two or three dictionary words both covet. The former must set out with specificity their historical presence in the market place – prove targeting – and the latter must emphasize the commonness of the words and […]

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Consolidation and Language of the Proceedings

The Policy authorizes either party to petition to consolidate “multiple disputes … before … the first Administrative Panel appointed to hear a pending dispute between the parties … provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN” [Paragraph 4(f)]. The Complainant in Farouk […]

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Pay-Per-Click Websites and Legitimacy

“Something more than the operation of a landing or PPC page is required to show lack of bona fide use,” Starmail Distributors Inc. v. Xedoc Holding SA aka domain admin, FA0911001296166 (January 27, 2010). The “something more” balances the strength of the trademark with the content of the website. The higher the classification of the […]

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Common Word Trademarks Defensible By What Respondent is Offering

Respondents registering common words that spell the name of a business or charitable entity state a good defense only if they use the domain names in the generic sense of the words and are not competitors. We saw this in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael Hunt and Mercado, FA0912001296574 […]

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Higher Standard of Proof for Trademarks Composed of Surnames and Geographic Terms

Trademarks composed of a founder’s name, Bloomberg for example, that have significant market recognition internationally have a high level of protection regardless of the respondent’s residence, but if by coincidence the surname is also a geographic indicator the complainant’s proof of targeting – a sine qua non under the UDRP – must be concrete and […]

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